TOPICS

“Information Processing Terminal”

Overview:

The Intellectual Property (IP) High Court overturned a decision of the Board of Examiners of the Japan Patent Office (JPO) on the grounds that it mistakenly rejected an amendment including Amendment 4 (hereinafter, the “Subject Amendment”) for not corresponding to an amendment restricting the scope of the claims. The Subject Amendment was filed by the applicant upon requesting an appeal against the final rejection.

Main Issue:

Whether the Subject Amendment including Amendment 4 deleting “irrespective of whether payment information is input or not” from the invention as defined prior to amendment corresponds to an amendment restricting the scope of the claims.

Summary:

Because the matter limiting the feature of “keeping each of the contact type reader and the non-contact type reader…to be on stand-by mode, i.e. ready to read information from the information storage medium” (hereinafter, the “Subject Mode”) has been deleted from the claim language by Amendment 4 , it could be interpreted that the scope of the amended invention covers “the information processing terminal for which whether payment information is input or not is associated with the Subject Mode”, while such a terminal is not covered by the scope of the invention of the present application.

However, the present invention is directed to an information processing terminal that is also applicable to uses other than payment. Regardless of whether it is a contact-type or non-contact type, the invention provides a terminal ready to read necessary information from the information processing medium within a short period of time. This remains true for the amended invention.

An example of “the information processing terminal for which whether payment information is input or not is associated with the Subject Mode” would be an information processing terminal that moves to the Subject Mode only when “payment information is input”. Use of such an information processing terminal regularly requires an input of “payment information”, which contradicts the object of the present invention and the amended invention.

For example, if a terminal is configured not to move to stand-by mode unless “payment information is input”, the terminal would never move into the Subject Mode when it comes to processing non-payment mediums such as “my number” identification cards which by nature do not have “payment information”. As a result, the terminal would not be able to read such non-payment mediums. This kind of terminal is not regarded as “an information processing terminal applicable to uses other than payment”.

As an opposite example, an information processing terminal that terminates the Subject Mode by an input of payment information may also be considered; however, such a terminal would be unable to read a medium after information is input. When the terminal functions for both payment and non-payment purposes, such a terminal would be irrational since once payment information is input, the terminal is no longer available for payment; that is, it provides a means for inputting payment information despite the payment process not being performed.

It would be unreasonable to construe that the amended invention including Amendment 4 covers “an information processing terminal for which whether information on a payment is input or not is associated with the Subject Mode” within its technical scope.

Summary:

An amendment deleting a matter limiting a feature of the invention would result in an invention that defines, in the claim language, matters that had been excluded by the limitation prior to the amendment. Accordingly, in many cases, such an amendment would be interpreted as expanding the feature of the invention, without corresponding to an amendment restricting the elements of the invention.

However, in this case, the Court found that Amendment 4 has not caused the amended invention to incorporate the matters that have been excluded from the invention as defined prior to the amendment. That is, the Court determined that the amendment is legal as it restricts the scope of the claims as a whole since the technical scope of the invention is not altered by Amendment 4, and the amendments other than Amendment 4, i.e. Amendments 1 to 3, narrow down the scope of the claims. This case provides interesting perspectives on determining whether an amendment restricting the scope of the claim is legitimate under Patent Act, Article 17-2(5)(ii).

Yuuji Wada